LeVeen v. Edwards

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was
not written for publication in a law journal and (2) is not binding
precedent of the Board.
Filed by: Trial Section Merits Panel Paper No. 351
Box Interference
Washington, D.C. 20231
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
ROBERT F. LEVEEN
Junior Party,
(Application 08/559,072),
v.
STUART D. EDWARDS, RONALD G. LAX
and HUGH SHARKEY
Senior Party
(Patent No. 5,536,267)
Patent Interference No. 104,290
Before McKELVEY, Senior Administrative Patent Judge, SCHAFER and
LEE, Administrative Patent Judges.
PER CURIAM.
MEMORANDUM OPINION
On April 23, 2002, we issued an order (Paper No. 348)
requiring Edwards to show cause why we should not impose sanction
in the form of compensatory attorney fees against Edwards in
connection with its brief at final hearing seeking review of an
interlocutory decision based on alleged abuse of discretion. We

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LeVeen v. Edwards
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found that the brief contained new and frivolous arguments.
Edwards filed a response on May 7, 2002 (Paper No. 349).
We find that Edwards has not shown good cause.
Edwards’ response does not overcome the main part of what we
regard as inexcusable in Edwards’ brief, i.e., the submission of
new arguments which had nothing to do with the rationale
initially presented in Edwards’ miscellaneous motion 29 and
preliminary motion 28. In Paper No. 348, we stated:
We have substantial difficulty understanding
Edwards’ presentation of the issues for review and its
reasons for relief. Edwards’ arguments are disjointed
and are based on a wide assortment of principles
without adequate explanation as to how they undermine
or defeat the explanation and rationale of the decision
sought to be reviewed.
Off the cuff and aimless rambling about a variety
of matters, whether or not they correspond to the
reasons for relief presented in Edwards’ miscellaneous
motion 29 and preliminary motion 28 and whether or not
they undermine or defeat the rationale of the decision,
characterizes the major portion of Edwards’ brief.
In Paper No. 348, we identified the reasons for relief as
presented by Edwards in its motions, pointed out the rationale
explained in the interlocutory decision, and noted that the
arguments presented by Edwards do not track either the reasons
presented for relief or the rationale of the interlocutory
decision. What Edwards has done is to use a final hearing review
of an interlocutory decision as a pretext to submit new and

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independent arguments about a separate matter that was not
previously raised before the Administrative Patent Judge. That
is not acceptable and is sanctionable without regard to whether
the new arguments are frivolous. We also stated in Paper No.
348:
Party Edwards changed counsel subsequent to the
rendering of the APJ’s decision on Edwards’
miscellaneous motion 29 and preliminary motion 28.
That, however, does not mean Edwards’ new counsel can
take the opposing party and the board back in time and
start afresh from the very beginning as if nothing had
occurred before the coming on scene of new counsel.
Edwards’ arguments about 37 CFR § 1.4(b), 37 CFR
§ 1.48(b), and alleged insufficient notice of inventorship change
do not bear a reasonable relationship to the propriety of the
interlocutory decision’s finding -- that nothing was uncovered
during the April 20, 2001 cross-examination of Dr. Robert F.
LeVeen, which gives rise to a threshold level of suspicion that
Robert F. LeVeen cannot be the sole inventor in LeVeen’s involved
application, sufficient to justify the taking of testimony from
Mr. Randy Fox to possibly support a belated motion for judgment.
That finding in the interlocutory decision cannot be
contrary to law due to any part of Edwards’ new arguments.
As for Edwards’ assertion that its new arguments should not
be deemed frivolous, we are satisfied that counsel for Edwards

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did not make the arguments in bad faith and that the lack of
merit of the arguments does not rise to the level of frivolity.
The holding of frivolousness is hereby withdrawn. Thus, the
basis justifying the imposition of a sanction is solely that the
final hearing brief was used as a pretext to raise new arguments
not previously presented to the administrative patent judge.
Whether it is the version of 37 CFR § 1.48(b) which reads
“When the application is involved in an interference . . . ” or
“If the application is involved in an interference . . .,” our
opinion on that rule remains the same –- that a Rule 1.634 motion
is not required to accompany a petition under 37 CFR § 1.48(b) so
long as the application is not involved in an interference at the
time the petition is filed. It should be noted that Edwards’
final hearing brief made no distinction between the words “when”
and “if” and did not discuss any change in the wording of Rule
1.48(b) or the reasons for such change.
As for Edwards’ response that only the Commissioner may
waive the requirements of a rule, our opinion did not depend on
the waiver of any rule. We indicated that Edwards is in no
position to complain about the lack of a Rule 1.634 motion when
Edwards’ own attorney agreed to a remand of the LeVeen
application for immediate entry of a formal decision on the

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LeVeen v. Edwards
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petition to change inventorship. In this circumstance, even if a
Rule 1.634 motion is required, which is not under the facts of
this case, the absence of such a motion is without consequence.
Notwithstanding the lack of showing of good cause not to
impose a sanction in the form of compensatory attorney fees, we
will not impose the sanction in this case against Edwards.
Instead, we choose to use this opinion as notice to practitioners
not to change the thrust of arguments previously made when review
of an interlocutory order is sought at final hearing. We do this
in the interest of providing an “abundance of fairness” to
parties who somehow might not have appreciated the impropriety of
changing arguments on review. See, e.g., Hockerson-Halberstadt
v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999).
FRED E. McKELVEY, Senior )
Administrative Patent Judge )
)
) BOARD OF PATENT
RICHARD E. SCHAFER ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
JAMESON LEE )
Administrative Patent Judge )